Paper 15
`Trials@uspto.gov
`571-272-7822 Entered: October 6, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`AMAZON.COM, INC. and AMAZON WEB SERVICES, INC.,
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00814
`Patent 6,766,389 B2
`____________
`
`
`
`
`Before JAMES B. ARPIN, BARBARA A. PARVIS, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`Trials@uspto.gov
`571-272-7822 Entered: October 6, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`AMAZON.COM, INC. and AMAZON WEB SERVICES, INC.,
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00814
`Patent 6,766,389 B2
`____________
`
`
`
`
`Before JAMES B. ARPIN, BARBARA A. PARVIS, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`IPR2017-00814
`Patent 6,766,389 B2
`
`
`I. INTRODUCTION
`
`On September 1, 2017, Amazon.com, Inc. and Amazon Web Services,
`Inc. (collectively, “Petitioner”) filed a Request for Rehearing (Paper 14,
`“Req. Reh’g”) of our Decision (Paper 10, “Dec. on Inst.”) instituting inter
`partes review of some, but not all, of the claims of U.S. Patent No.
`6,766,389 B2 (“the ’389 patent”). In particular, Petitioner requests a partial
`rehearing of our decision not to institute inter partes review of claims 4, 9,
`and 13 as unpatentable under 35 U.S.C. § 102(b) as allegedly anticipated by
`Shigeeda.1
`For the reasons that follow, Petitioner’s request for rehearing is
`denied.
`
`STANDARD OF REVIEW
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” The party
`requesting rehearing has the burden of showing that the decision from which
`rehearing is sought should be modified, and “[t]he request must specifically
`identify all matters the party believes the Board misapprehended or
`overlooked.” 37 C.F.R. § 42.71(d). An abuse of discretion may be
`determined if a decision is based on an erroneous interpretation of law, if a
`factual finding is not supported by substantial evidence, or if the decision
`represents an unreasonable judgment in weighing relevant factors. Star
`Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d
`1305, 1315–16 (Fed. Cir. 2000).
`
`
`1 US Patent No. 5,778,425 (Ex. 1004).
`2
`
`
`
`
`
`IPR2017-00814
`Patent 6,766,389 B2
`
`
`ANALYSIS
`Claim 9
`On rehearing, Petitioner argues that we abused our discretion in
`denying institution as to claim 9 by referring to our analysis for claim 4
`because “claim 9 merely requires that coherency be maintained within
`unspecified components of the integrated circuit,” as opposed to claim 4,
`which requires the “bridge circuit to operate to maintain cache coherency for
`the integrated circuit.” Req. Reh’g 5–7. Petitioner contends that, “[g]iven
`these differing limitations, the Board should have independently considered
`whether Shigeeda discloses the particular limitations in claim 9.” Id. at 5–6.
`According to Petitioner, “[h]ad the Board considered the Shigeeda passages
`analyzed in the Petition for claim 9 (and cross-referenced from claim 4), the
`[Board] would have found that Petitioner is reasonably likely to show that
`Shigeeda anticipates the broader claim 9.” Id. at 8 (citations omitted).
`Contrary to Petitioner’s arguments, however, we did consider
`claim 9’s differing limitations in our Decision on Institution. With respect to
`claim 4, we first stated that “Petitioner has not explained sufficiently how
`Shigeeda discloses operation ‘to maintain cache coherency,’ as recited in
`claim 4.” Dec. on Inst. 20. We further stated:
`Petitioner provides no further explanation of this citation
`[(Shigeeda, 42:38–47)]—specifically why a cache flush that
`occurs only upon the write-back cache’s becoming full of dirty
`data to “reestablish coherency” discloses “maintain[ing] cache
`coherency.” Petitioner also cites Shigeeda’s Abstract (Pet. 48
`n.105) but provides no further explanation of its relevance.
`Although Shigeeda’s Abstract mentions a cache flush operation,
`it does not explain how a cache flush discloses an operation “to
`maintain cache coherency,” as recited in claim 4.
`
`
`
`3
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`IPR2017-00814
`Patent 6,766,389 B2
`
`Dec. on Inst. 20–21 (first alteration added). This explanation was directed to
`the requirement of claim 4 to “maintain cache coherency.” Id. at 20.
`Following this explanation, we stated: “Second, Petitioner does not explain
`sufficiently how bus bridge 716 ‘operate[s] to maintain cache coherency for
`the integrated circuit,’ as recited in claim 4.” Id. at 21. This second reason
`for denying institution as to claim 4 was specific to claim 4’s requirement of
`a “bridge circuit to operate to maintain cache coherency for the integrated
`circuit.” See id. at 21–22.
`In denying institution as to claim 9 as allegedly anticipated by
`Shigeeda, we stated:
`Because Petitioner’s contentions as to claims 9 and 13 rely
`on its inadequate explanations as to claim 4 and do not provide
`further explanation regarding how Shigeeda allegedly discloses
`maintaining cache coherency, we determine the information
`presented in the Petition does not show a reasonable likelihood
`Petitioner would prevail in challenging claims 9 and 13 as
`anticipated by Shigeeda.
`Id. at 23–24 (emphasis added). In our decision to deny institution as to
`claim 9, therefore, we refer to our first reason for denying institution as to
`claim 4—that Petitioner did not adequately explain how Shigeeda discloses
`maintaining cache coherency. Our Decision was not based on our second
`reason for denying institution as to claim 4—Petitioner’s failure to explain,
`in the Petition, how bus bridge 716 maintains cache coherency.
`Because, in our Decision on Institution, we considered the differences
`in claim language between claims 4 and 9, we did not abuse our discretion in
`denying institution of review of claim 9.
`
`
`
`4
`
`
`
`IPR2017-00814
`Patent 6,766,389 B2
`
`
` Claims 4, 9, and 13
`In denying institution of review of claims 4, 9, and 13, we stated:
`Petitioner also cites a ten-page passage from the testimony
`of its declarant, Dr. Weissman. See Ex. 1003 ¶¶ 112–129 (cited
`at Pet. 48 n.104). The cited testimony provides a lengthy
`explanation as to how Shigeeda allegedly discloses cache
`coherency in two ways. See id.; see also id. ¶ 116 (“Shigeeda
`solves the problem of cache incoherency, and maintains the
`coherence of its caches, in two ways.”). This explanation as to
`Shigeeda, however, is absent from the Petition. A declaration in
`support of a petition may be proffered as evidence in support of
`an argument made in the petition. Such a declaration, however,
`is not a vehicle through which a petitioner may make an
`argument that should have been made in the petition. To permit
`otherwise would allow petitioners to exceed the word limits of
`our Rules (see 37 C.F.R. § 42.24) and force the patent owner to
`respond to arguments not made in the petition.
`Dec. on Inst. 22; see also id. at 23–24 (“Because Petitioner’s contentions as
`to claims 9 and 13 rely on its inadequate explanations as to claim 4 and do
`not provide further explanation regarding how Shigeeda allegedly discloses
`maintaining cache coherency, we determine the information presented in the
`Petition does not show a reasonable likelihood Petitioner would prevail in
`challenging claims 9 and 13 as anticipated by Shigeeda.”).
`On rehearing, Petitioner argues the cited portions of Dr. Weissman’s
`testimony “did not add any new arguments on top of” the arguments in the
`Petition but, rather, “explain how a [person of ordinary skill in the art] would
`have understood that cache flush processes, such as those in Shigeeda,
`reestablish coherency and how Shigeeda’s bus bridge 716 participates in that
`very process.” Req. Reh’g 10. According to Petitioner, the “citation to
`paragraphs 112-129 of Dr. Weissman’s declaration serves to identify the
`
`
`
`5
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`IPR2017-00814
`Patent 6,766,389 B2
`
`specific portions of the evidence relied upon to support the arguments
`presented in the Petition, per the Board’s rules.” Req. Reh’g 10–11.
`We disagree. Petitioner’s citation to such a lengthy passage in its
`declarant’s testimony (greater than 10 pages) is not an adequate
`identification of a “specific portion[] of the evidence,” as required by our
`Rules. See 37 C.F.R. § 42.104(b)(5) (“The Board may exclude or give no
`weight to the evidence where a party has failed to state its relevance or to
`identify specific portions of the evidence that support the challenge.”).
`Indeed, some of the cited testimony appears to be directed to a theory of how
`Shigeeda allegedly discloses cache coherency that is not argued in the
`Petition. See Ex. 1003 ¶¶ 116–118. In particular, Dr. Weissman testifies
`that “Shigeeda solves the problem of cache incoherency, and maintains the
`coherence of its caches, in two ways.” Ex. 1003 ¶ 116. The first way
`identified by Dr. Weissman is “by implementing cache 704 as a write-
`through cache,” and the “second way involves implementing data circuit
`720—which, like cache 704, is also a cache memory—as a write-back cache
`with a specific cache coherence protocol.” Ex. 1003 ¶¶ 116, 119. By
`contrast, Petitioner identifies only one way in which Shigeeda allegedly
`discloses cache coherency: “Shigeeda uses an ‘automatic write,’ or a ‘cache
`flush,’ of the write-back cache block to ‘reestablish coherency’ in its
`system.” Pet. 48 (citing Ex. 1005, Abstract, 42:38–47). This appears to
`correspond to the second way identified by Dr. Weissman, who testifies that,
`“[u]pon the write-back cache being full of modified data, an ‘automatic
`write’ to main memory—also called a ‘cache flush’—is performed to
`‘reestablish coherency.’” Ex. 1003 ¶ 121 (citing Ex. 1005, Abstract, 31:65–
`32:20, 42:38–59). Thus, it is unclear what relevance, if any, Dr. Weissman’s
`
`
`
`6
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`IPR2017-00814
`Patent 6,766,389 B2
`
`testimony regarding the first cache coherency theory has to the arguments in
`the Petition. Additionally, with respect to Petitioner’s contentions as to how
`the bus bridge allegedly operates to maintain cache coherency, as explained
`in the Decision on Institution, “Petitioner cites five columns and two figures
`from Shigeeda without any further explanation in the Petition specifying the
`relevance or significance of this cited evidence.” Dec. on Inst. 21. This lack
`of clarity as to Petitioner’s contentions highlights the problem with naked
`citations to lengthy portions of the evidence without accompanying
`explanations.
`As to Petitioner’s argument that our Decision on Institution “implied
`that the substance of the testimony in paragraphs 112-129 should have been
`included in the Petition itself” (Req. Reh’g 9), what is included in a petition
`is up to the petitioner, of course. However, as we stated in our Decision on
`Institution, “[a] declaration in support of a petition may be proffered as
`evidence in support of an argument made in the petition,” but it “is not a
`vehicle through which a petitioner may make an argument that should have
`been made in the petition.” Dec. on Inst. 22. We analyzed the arguments
`made in the Petition as to claims 4, 9, and 13, and we did not find them
`sufficiently persuasive to demonstrate a reasonable likelihood of prevailing
`in inter partes review for the reasons explained in our Decision. See Dec. on
`Inst. 19–24. Thus, the citation to a lengthy passage of a declaration did not
`overcome insufficient argument and explanation in the Petition.
`
`
`CONCLUSION
`Petitioner has not carried its burden of demonstrating we
`misapprehended or overlooked any matters in our Decision denying
`
`
`
`7
`
`
`
`IPR2017-00814
`Patent 6,766,389 B2
`
`institution of inter partes review of claims 4, 9, and 13. 37 C.F.R.
`§ 42.71(d).
`For the foregoing reasons, Petitioner’s Request for Rehearing is
`denied.
`
`
`
`PETITIONER:
`Joseph F. Edell
`Richard Z. Zhang
`FISCH SIGLER LLP
`Joe.edell.ipr@fischllp.com
`Richard.zhang.ipr@fischllp.com
`
`
`PATENT OWNER:
`Jason S. Angell
`Jing H. Cherng
`FREITAS ANGELL & WEINBERG LLP
`jangell@fawlaw.com
`gcherng@fawlaw.com
`
`
`
`8
`
`
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